'
`
`
`
`( ifl/j'l
`"J 1
`’
`L7
`d/
`.
`o * R
`Attorney Docket No.. PALM-2910.SG K
`
`
`
`-
`P0
`9
`pe
`
`lass Postage and addressed to the Commissioner for Patents PO Box 1450, Alexandria, VA 22313-1450, on the below date
`A
`
`bearing First
`of de 0 Sit
`
`
`
`Dates
`De- asit:
`
`02 14 06
`
`‘ameo 'erson
`
`Makin- the Deusit:
`
`
`
`Donna Petford
`
`Ignatureo ne'erson
`Makin the Den nsit:
`
`,
`.0!
`
`I
`. D ,
`* we 9'
`
`
`
`In re Application of: E. Michael LUNSFORD, Steve PARKER, David KAMMER, David MOORE
`
`Application No.109/727,727
`
`Examiner: MILORD, Marceau
`
`Filed: 11/30/00
`
`Art Unit: 2682
`
`Confirmation No.: 7522
`
`For: A METHOD AND SYSTEM FOR WIRELESSLY AUTODIALING A TELEPHONE NUMBER FROM A RECORD
`STORED ON A PERSONAL INFORMATION DEVICE
`
`Commissioner for Patents
`PO. Box 1450
`Alexandria, VA 22313-1450
`
`1.
`
`Transmitted herewith is an amendment for this application
`
`W
`
`2.
`
`Applicant is other than a small entity
`
`Extension of Term
`
`3.
`
`(a)
`
`The proceedings herein are for a patent application and the provisions of 37 C.F.R. 1.136 apply.
`
`[
`
`]
`
`Applicant petitions for an extension of time under 37 C.F.R. 1.136
`(fees: 37 C.F.R. 1.17(a)-(d) for the total number of months checked belowz)
`
`w E
`[ ]one month
`$120.00
`[ ]two months
`$450.00
`[ ]three months
`$1,020.00
`[
`] four months
`$1,590.00
`[
`] five months
`$2,160.00
`Fee $
`
`If an additional extension of time is required, please consider this a petition therefor.
`
`(b)
`
`[X]
`
`Applicant believes that no extension of term is required. However, this conditional petition is
`being made to provide for the possibility that applicant has inadvertently overlooked the
`need for a petition for extension of time.
`
`1 of 2
`
`rev. 10/04 kgr
`
`UNIFIED 1015
`
`UNIFIED 1015
`
`

`

`Attorney Docket No.: PALM-2910.8G
`
`Fee Calculation
`
`4.
`
`The fee for claims (37 C.F.R. 1.16(b)—(d)) has been calculated as shown below:
`
`for other than a small entit
`
`Fee Items
`
`Claims
`Remaining After
`Amendment
`
`Highest Number
`of Claims
`Previously Paid
`
`Present
`Extra Claims
`
`Fee Rate
`
`Total
`
`Total Fees
`
`Total Claims —-_ x $50 . 00
`Indeoendent Claims
`2 —.- x $200. 00
`Multiple Dependent Claim Fee (one or more, first added by this
`$360 . 00
`amendment
`
`5.
`
`The full fee due in connection with this communication is
`provided as follows:
`
`PAYMENT OF FEES
`
`[ x ] The Commissioner is hereby authorized to charge any additional fees associated with this
`communication or credit any overpayment to Deposit Account No.: 23-0085 .
`A duplicate copy of this authorization is enclosed.
`
`[
`
`[
`
`]
`
`]
`
`Acheck in the amount of_$_
`
`Charge any fees required or credit any overpayments associated with this filing to Deposit
`Account No.:
`23-0085.
`
`Please direct all correspondence concerning the above-identified application to the following
`address:
`
`WAGNER, MURABITO & HAO LLP
`Two North Market Street, Third Floor
`San Jose, California 95113
`(408) 938-9060
`Customer No:
`
`Respectfully submitted,
`
`By:
`
`3MP
`Bryan M. Failing
`Reg. No. 57,974
`
`Date:
`
`Z/Iq/OG’
`
`2 0f 2
`
`rev. 10/04 kgr
`
`

`

`\PALM-2910.SG
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Patent
`
`Examiner: Milord, Marceau
`
`Art Unit:
`
`2682
`
`In re Application of
`
`LUNSFORD et al.
`
`Serial No. 09/727,727
`
`Filing Date: November 30, 2000
`
`For:
`
`A METHOD AND SYSTEM FOR
`WIRELESSLY AUTODIALING A
`TELEPHONE NUMBER FROM
`RECORD STORED ON A
`PERSONAL INFORMATION
`DEVICE
`
`vvvvvvvvvvvvvvv
`
`Commissioner for Patents
`PO. Box 1450
`Alexandria, VA 22313-1450
`
`SUPPLEMENTAL AMENDMENT AND RESPONSE
`
`Dear Sir:
`
`In response to the Notice of Non-Compliant Amendment mailed on
`
`January 17, 2006 regarding the Amendment and Response To Final Office
`
`Action filed on November 9, 2005, Applicants respectfully request
`
`reconsideration of the above captioned patent application in view of the
`
`amendments and arguments set forth below.
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 1 -
`
`Art Unit 2682
`PALM-2910.SG
`
`

`

`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in
`
`the application:
`
`LISTING OF CLAIMS:
`
`1-18. (cancelled)
`
`19.
`
`(currently amended) An automated telephone dialing system,
`
`comprising:
`
`a telephone having a wireless port for short range wireless data transfer;
`
`and
`
`a persenal—mfermatierrdewee handheld computer system having a
`
`
`wireless port for communication with the wireless port on the telephone, wherein
`
`a specific telephone number is selectable from a list displayed on the handheld
`
`computer system and wherein the handheld computer system is operable to
`
`transfer the specific telephone number to the telephone using a wireless
`
`communication, and wherein the persenal—mfermaheneeviee handheld computer
`
`system is configured to control the telephone via [[a]] th_e wireless
`
`communication such that the telephone dials a—telephene—number—stered-en—the
`
`persenahnfermatiendewee the specific telephone number.
`
`20.
`
`(currently amended) The system of Claim 19 wherein the dialing of
`
`the specific telephone number by the telephone is automatically effected in
`
`response to a user interacting with the information stored on the personal
`
`mfermatieneewee handheld computer system.
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 2 -
`
`Art Unit 2682
`PALM-2910.86
`
`

`

`21.
`
`(currently amended) The system of claim 20 wherein the information
`
`stored in the persenal—infermatien—deviee handheld computer system includes
`
`contact information.
`
`22.
`
`(currently amended) The system of claim 20 wherein the information
`
`stereel—en—the—persenal—infermatien-deviee "it is presented as a list of contacts
`
`and the telephone number dialed by the telephone corresponds to one of the
`
`contacts selected by the user.
`
`23.
`
`(currently amended) The system of Claim 20 wherein the information
`
`stored on the persenal—mfermatiewdeviee handheld computer system is
`
`maintained by a management program executing on the passed—information
`
`devise handheld computer system and the management program controls the
`
`telephone via the wireless communication.
`
`24.
`
`(previously presented) The system of Claim 23 wherein the
`
`management program is an address book program.
`
`25.
`
`(previously presented) The system of Claim 19 wherein the wireless
`
`communication is compatible with a version of the Bluetooth specification.
`
`26.
`
`(previously presented) The system of Claim 19 wherein the wireless
`
`communication is compatible with a version of the erA specification.
`
`27.
`
`(currently amended) An automatic wireless telephone dialing
`
`method, comprising the steps of:
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 3 -
`
`Art Unit 2682
`PALM-2910.SG
`
`

`

`a)
`
`establishing a wireless communications link for a short range data
`
`transfer between a telephone and a persenal-infemqatien-deviee handheld
`
`computer system;
`
`b)
`
`
`
`devise receiving a user input identifying a specific telephone number from a list
`
`displayed on the handheld computer system; [[and]]
`
`c
`
`transferrin thes ecifictele hone number from the handheld
`
`computer system to the telephone using a wireless communication; and
`
`[[c)]] g)
`
`controlling the telephone using the persenal—mfermatiendewce
`
`handheld computer system to cause the telephone to dial the specific telephone
`
`number stereden—the—persenal—infermatieneeviee.
`
`28.
`
`(currently amended) The method of Claim 27 wherein step [[c)]] g)
`
`further includes the step of dialing the specific telephone number automatically in
`
`response to a user interacting with the information stored on the persenai
`
`mfermahenclewse handheld computer system.
`
`29.
`
`(currently amended) The method of Claim 28 wherein the information
`
`stored in the persenahnfermatienmwce handheld computer system includes
`
`contact information.
`
`30.
`
`(currently amended) The method of claim 28 wherein the information
`
`stered—en—the—persenal—mfermatieneewce is; is presented as a list of contacts
`
`and the telephone number dialed by the telephone corresponds to one of the
`
`contacts selected by the user.
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 4 -
`
`Art Unit 2682
`PALM-2910.SG
`
`

`

`31.
`
`(currently amended) The method of Claim 28 wherein the information
`
`stored on the perenaanermatien-deviee handheld computer system is
`
`maintained by a management program executing on the perenaanermatien
`
`devise handheld computer system and the management program controls the
`
`telephone via the wireless communication.
`
`32.
`
`(previously presented) The method of Claim 31 wherein the
`
`management program is an address book program.
`
`33.
`
`(previously presented) The method of Claim 27 wherein the wireless
`
`communication is compatible with a version of the Bluetooth specification.
`
`34.
`
`(previously presented) The method of Claim 27 wherein the wireless
`
`communication is compatible with a version of the erA specification.
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 5 -
`
`Art Unit 2682
`PALM-2910.86
`
`

`

`REMARKS
`
`Claims 19—34 remain pending in the case. Claims 19-34 stand rejected.
`
`Although Claims 19-23 and 27-31 have been amended herein, no new matter
`
`has been added in view of the claim amendments. Applicants respectfully
`
`request reconsideration in view of the remarks presented herein.
`
`35 U.S.C. §103(a)
`
`Claims 19-34 are rejected under35 U.S.C. §103(a) as being unpatentable
`
`over United States Patent No. 6,600,902 to Bell, hereinafter referred to as “Bell,”
`
`in view of United States Patent No. 6,484,027 to Mauney, hereinafter referred to
`
`as “Mauney." Applicants have reviewed the cited references and respectfully
`
`submit that the embodiments of the present invention as recited in Claims 19-34
`
`are patentable over Bell in view of Mauney based upon the following rationale.
`
`Applicants respectfully direct the Examiner to independent Claim 19 as
`
`amended in this response (emphasis added):
`
`An automated telephone dialing system, comprising:
`a telephone having a wireless port for short range wireless
`data transfer; and
`a handheld computer system having a wireless port for
`communication with the wireless port on the telephone, wherein a
`specific telephone number is selectable from a list displayed on the
`handheld computer system and wherein the handheld computer
`system is operable to transfer the specific telephone number to the
`telephone using a wireless communication, and wherein the
`handheld computer system is configured to control the telephone
`via the wireless communication such that the telephone dials the
`specific telephone number.
`
`Independent Claim 27 recites similar limitations. Claims 20-26 that depend from
`
`independent Claim 19 and Claims 28-34 that depend on independent Claim 27
`
`provide further recitations of the features of the present invention.
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 6 -
`
`Art Unit 2682
`PALM-2910.SG
`
`

`

`Claim 19 recites a system that comprises at least two devices: a
`
`telephone and a handheld computer system. The handheld computer system
`
`®p|_ay_s_ a list of phone numbers, from which the user may m one to dial.
`
`Claim 19 further recites that the handheld computer system is able to con—trot the
`
`telephone, thus causing the telephone to dial the selected telephone number
`
`transferred to the telephone from the handheld computer system. Applicants
`
`respectfully assert that the neither Bell nor Mauney teach or suggest these
`
`limitations of Claim 19, alone or in combination, for the following rationale.
`
`Applicants respectfully assert that Bell does not suggest, describe, or
`
`teach the limitation “wherein a specific telephone number is selectable from a list
`
`displayed on the handheld computer system" as recited in Claim 19 (emphasis
`
`added). Applicants understand Bell to teach a wireless system for transferring
`
`data objects, such as virtual business cards and calendars, from one wireless
`
`station to another (Abstract; col. 3, lines 30-33). Although a virtual business card
`
`or calendar may contain a phone number, the phone number is not selected
`
`from a list as recited in Claim 19. As such, Bell does not suggest, describe, or
`
`teach that a virtual business card or calendar is a list, or that a specific telephone
`
`number is chosen from any list, as claimed by Applicants.
`
`Moreover, even assuming that a virtual business card or calendar is a list,
`
`Bell effectively teaches away from selecting aM telephone number from
`
`the list, as claimed by Applicants, by teaching that the em virtual business
`
`card or calendar is selected for transfer during a swap (Fig. 3; col. 3, lines 30-
`
`33). More specifically, Bell defines virtual business cards and calendars as data
`
`objects, and teaches that these data objects are selected in whole for transfer
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 7 -
`
`Art Unit 2682
`PALM-2910.86
`
`

`

`(col. 5, lines 26-30; col. 6, lines 44-46). Therefore, by teaching selection of the
`
`entire virtual business card or calendar, Bell effectively teaches away from
`
`selection of a specific telephone number from a list as claimed by Applicants.
`
`Applicants respectfully assert that Bell does not suggest, describe, or
`
`teach the limitation “wherein the handheld computer system is configured to
`
`go_ntro_l the telephone via the wireless communication such that the telephone
`
`diils the specific telephone number" as recited in Claim 19 (emphasis added).
`
`As discussed above, Applicants understand Bell to teach a wireless system for
`
`exchanging data, without mention of one wireless station controlling another
`(Abstract). However, the mere exchange of data as described in Bell is separate
`
`and distinct from the claim limitation of one wireless station controlling another.
`
`As shown in blocks 805 and 806 of Figure 8 in the present application, the phone
`
`number to be dialed is transferred before the receiving wireless telephone is
`
`controlled or instructed to dial the telephone number. Accordingly, Claim 19
`
`recites the data exchange and control elements as separate limitations.
`
`In
`
`addition, not only is Bell silent as to one wireless station controlling another, but
`
`Bell also fails to more specifically suggest, describe, or teach one wireless
`
`station dialing a specific telephone number on another as claimed by Applicants.
`
`Furthermore, Applicants respectfully assert that Bell teaches away from
`
`the configuration where one wireless station controls another.
`
`In accordance
`
`with Figure 3 of Bell, the recipient wireless station must enter a PIN-code in order
`
`for it to receive the data sent by the transmitting wireless station (col. 5, line 65
`
`through col. 6, line 35). As such, Bell teaches that a transmitting wireless station
`
`may not unilaterally control a receiving wireless station to accept data, thereby
`
`completing the data exchange. Therefore, if a transmitting station may not force
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 8 -
`
`Art Unit 2682
`PALM-2910.SG
`
`

`

`the receipt of data, it cannot then control the receiving wireless station to process
`
`that data. Thus, Bell effectively teaches away from one wireless station
`
`controlling another, as claimed by Applicants.
`
`Moreover, the combination of Bellland Mauney fails to teach or suggest
`
`the claimed embodiments because Mauney does not overcome the
`
`shortcomings of Bell. Mauney, alone or in combination with Bell, does not show
`
`or suggest the present invention as claimed.
`
`Applicants respectfully assert that Mauney does not teach, describe, or
`
`suggest the limitation “wherein a specific telephone number is selectable from a
`
`“it displayed on the handheld computer system" as recited in Claim 19
`
`(emphasis added). Applicants understand Mauney to teach wireless handsets
`
`with a memorize feature that allows the handsets to exchange data via wireless
`
`transmission (Abstract). However, Mauney does not teach that this transferred
`
`data is a list, as claimed by Applicants. Therefore, Mauney does not suggest,
`
`describe, or teach that a specific phone number is selectable from a list
`
`displayed on a handheld computer system, as claimed by Applicants.
`
`Moreover, even assuming that the transferred data is a list, Mauney
`
`effectively teaches away from selecting am telephone number from the list,
`
`as claimed by Applicants, by teaching that the data is transferred in whole (Fig.
`
`SD). More specifically, in accordance with Figure 6D, Mauney teaches that the
`
`receiving handset performs all processing of the handset data after receipt (col.
`
`21, lines 4-9). As such, the transmitting handset transfers the data in whole such
`
`that the receiving handset can thereafter process the data. Therefore, by
`
`
`teaching selection of the handset data in whole, Mauney effectively teaches
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 9 -
`
`Art Unit 2682
`PALM-2910.8G
`
`

`

`away from selection of a specific telephone number from a list as claimed by
`
`Applicants.
`
`Applicants respectfully assert that Mauney does not teach, describe, or
`
`suggest the claimed limitation of “the handheld computer system is configured to
`
`M the telephone via the wireless communication such that the telephone
`
`dials the specific telephone number” (emphasis added). Applicants understand
`
`Mauney to teach wireless handsets with a memorize feature that allows the
`
`handsets to exchange data via wireless transmission, without mention of one
`
`handset controlling another (Abstract). However, the mere exchange of data as
`
`described in Mauney is distinguishable from one wireless handset controlling
`
`another as claimed by Applicants. As shown in blocks 805 and 806 of Figure 8
`
`in the present application, the phone number to be dialed is transferred before
`
`the receiving wireless telephone is controlled or instructed to dial the telephone
`
`number. Accordingly, Claim 19 recites the data exchange and control elements
`
`as separate limitations.
`
`In addition, not only is Mauney silent as to one wireless
`
`handset controlling another, but Mauney also fails to more specifically show one
`
`wireless handset dialing a specific telephone number on another as claimed in
`
`the present application.
`
`Furthermore, Applicants respectfully assert that Mauney teaches away
`
`from the configuration where one wireless handset controls another. Mauney
`
`teaches that the memorize feature can only be activated if the transmitting and
`
`receiving wireless handsets are first brought in close proximity to one another,
`
`and then a predetermined key is pressed on both handsets within a short time
`
`window (col. 16, lines 24-30). As such, Mauney teaches that the user of the
`
`receiving wireless handset must interact to complete the memorize feature,
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 10 -
`
`Art Unit 2682
`PALM-2910.8G
`
`

`

`which in effect teaches away from the ability of the transmitting handset to
`
`control the receiving handset.
`
`For the reasons discussed herein, Applicants respectfully assert that the
`
`combination of Bell and Mauney does not suggest, describe, or teach the claimed
`
`embodiments of the present invention as recited in independent Claim 19.
`
`Therefore, independent Claim 19 overcomes the 35 U.S.C. §103(a) rejection of
`
`record, and thus, is in condition for allowance. Since independent Claim 27 recites
`
`limitations similar to independent Claim 19, independent Claim 27 also overcomes
`
`the 35 U.S.C. §103(a) rejection of record, and thus, is also in condition for
`
`allowance. Further, Applicants respectfully submit that the combination of Bell and
`
`Mauney does not suggest, describe, or teach the additional claimed features of the
`
`present invention as recited in Claims 20-26 that depend upon allowable base Claim
`
`19, and Claims 28-34 that depend upon allowable base Claim 27. Therefore,
`
`Applicants respectfully submit that Claims 20-26 and 28-34 overcome the 35 U.S.C.
`
`§103(a) rejections of record as these claims depend upon allowable base claims.
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 11 -
`
`Art Unit 2682
`PALM-2910.86
`
`

`

`CONCLUSION
`
`In light of the above remarks, Applicants respectfully request reconsideration
`
`of the rejected claims. Based on the arguments presented above, Applicants
`
`respectfully assert that Claims 19-34 overcome the rejections of record, and
`
`therefore, Applicants respectfully solicit allowance of these Claims.
`
`The Examiner is invited to contact Applicants’ undersigned representative if
`
`the Examiner believes such action would expedite resolution of the present
`
`Application.
`
`Respectfully submitted,
`
`WAGNER, MURABITO & HAO L.L.P.
`
`Dated: 2! H
`
`,2006
`
`EMF
`
`Bryan M. Failing
`Registration No. 57,974
`
`Two North Market Street
`Third Floor
`San Jose, CA 95113
`(408) 938-9060
`
`Serial No. 09/727,727
`Examiner: Milord, Marceau
`
`- 12 -
`
`Art Unit 2682
`PALM-2910.8G
`
`